Ex Parte Nguyen et al

Patent Trial and Appeal Board

Dec 13, 2016

12866060 (P.T.A.B. Dec. 13, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/866,060 08/04/2010 Dennis P. Nguyen 111078-016302US 8779
102197 7590 12/15/2016
Chamberlain, Hrdicka, White, Williams
& Aughtry, P.C.
1200 Smith Street, 14th Floor
Houston, TX 77002
EXAMINER
WANG, WEI
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
12/15/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patents @ chamberlainlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS P. NGUYEN and CHRISTY L. PETTER
Appeal 2014-005694
Application 12/866,060
Technology Center 3600
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1 and 3-27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party of interest as Cameron International
Corporation. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated June 20, 2013 (“Final
Act.”), as supplemented by the Advisory Actions dated August, 30, 2013,
October 7, 2013, and December 27, 2013.
Appeal 2014-005694
Application 12/866,060
CLAIMED SUBJECT MATTER
Claims 1, 7, and 19 are the independent on appeal. Claim 1,
reproduced below, is representative of the claimed subject matter on appeal.3
1. A casing installation system for installing casing in a
wellhead, the casing supported by a casing hanger, the system
including:
a seal assembly locatable within the wellhead surrounding
the casing hanger;
a torque provider assembly including:
a body fixably attachable to the wellhead and
including a bore, the bore including a centerline and
alignable with the wellhead bore;
the body further including a first set of pistons
within cylinders oriented at angles offset from and
perpendicular to the centerline of the bore; and
the pistons being moveable between a retracted
position and an extended position where the pistons are
extended into the body bore;
where the pistons moving between the retracted and
extended positions imparts a linear force capable of
rotating at least a portion of the seal assembly in a first
direction and moving the at least portion of the seal
assembly in a direction axially parallel to the centerline of
the body bore to set the seal assembly while the position
of the body relative to the wellhead is maintained.
3 Claim 1 as presented in the Claims Appendix of Appellants’ Appeal Brief
includes amendments to the claims made pursuant to an After-Final
Amendment filed on August 19, 2013 which were not entered by the
Examiner. See Advisory Actions dated August, 30, 2013, October 7, 2013,
and December 27, 2013. The claims subject to appeal are the claims as
amended by the Amendment dated May 28, 2013.
2
Appeal 2014-005694
Application 12/866,060
REJECTIONS
I. Claims 7—11, 16, 17, and 19-25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Klemm (US 4,719,978; iss. Jan. 19, 1988).
II. Claims 1, 3—6, and 13—15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Baugh (US 4,597,448; iss. July 1, 1986) and
Klemm.
III. Claims 12, 18, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Klemm.
ANALYSIS
Rejection I
Regarding independent claims 7 and 19, the Examiner finds, inter
alia, that Klemm’s rotating pipe 17 corresponds to the claimed object, and
that Klemm’s table 19 corresponds to the claimed body. Final Act. 2, 3
(citing Klemm, Fig. 1). The Examiner further finds that Klemm’s driving
cylinders 40, 41, each containing hydraulic piston rods 43, impart a linear
force capable of rotating pipe 17 and moving pipe 17 in a direction axially
parallel to the centerline of the body bore, as required by claims 7 and 19.
Id. 3 (citing Klemm 1:4—5, 2:4—7); see also Ans. 3^4 (citing Klemm 3:21—
22). The Examiner explains that
Klemm discloses that the pipe (17) is rotated into the ground.
Klemm uses hydraulic cylinders (25) to assist a vertical
movement of the pipe (17). In the [Specification, Appellants]
use[] the threads on the landing ring (22) to assist a vertical
movement of the landing ring while rotating the landing ring
(22). However, the requirement of the landing ring with threads
is not recited in claim 7. So one [of] ordinary skill in the art can
rely on a different way, such as hydraulic cylinders (25 by
Klemm), to assist a vertical movement of the pipe (17 . . .).
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Appeal 2014-005694
Application 12/866,060
Ans. 3^4 (citations omitted).
Appellants argue that “driving cylinders 40, 41 [of Klemm] only
impart rotational movement to the pipe 17 and do not act to move the pipe
17 into the hole.” Appeal Br. 12; see also Reply Br. 7. Appellants submit
that Klemm “uses hydraulic cylinders 25 to lower the entire rotary drive 18
to move the pipe 17 into the bore.” Appeal Br. 12; Reply Br. 6—7.
Appellants explain that “[a]lthough[] the claimed pistons work with other
structures to move the pipe in an axial direction, the power to move the pipe
axially is still coming from the piston providing rotary force.” Reply Br. 7.
Appellants submit that “Klemm requires and specifically teaches two
separate power sources to accomplish rotary and axial movement.” Id.
Claims 7 and 19 require “imparting a linear force ... to rotate at least
a portion of the object. . . and to move the at least portion of the object. . .
in a direction axially parallel to the centerline of the body bore.” Appeal Br.
17, 19 (Claims App.) (emphasis added). We agree with Appellants that
claims 7 and 19 require the linear force to both rotate the object and move
the object axially within the bore of the wellhead. Klemm discloses that
“during the working stroke of [the] feed piston[s], . . . rotary disk 20
[rotates] relative to table 19” (Klemm 4:40-48), and that “[i]n rotating the
rotary table 20 ..., pipe 17 is entrained and also rotated via the pressure
member 35 and the clamping jaws 17” {id. at 5:66—68). However, as
correctly argued by Appellants, Klemm teaches that “rams 25 in the form of
hydraulic cylinders” lift and lower table 19, such that “rams 25 provid[e] the
advance or feeding force for the pipe 17 and [are] also suited to extract the
pipe out of the borehole.” Id. at 3:40-48; see also Appeal Br. 12. Thus, a
preponderance of the evidence does not support the Examiner’s finding that
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Application 12/866,060
Klemm’s driving cylinders 40, 41, each containing hydraulic piston rods 43,
which impart a linear force to rotate the pipe, also move the pipe axially
within the bore. Rather, the pipe is moved axially within the bore by driving
rams 25, which are disclosed and depicted as a separate system from driving
cylinders 40, 41. See, e.g., Klemm, Fig. 1.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 7 and 19, and claims 8—11, 16, 17, and 20—25 depending
therefrom.
Rejection II
The Examiner finds, inter alia, that “Baugh does not disclose a torque
provider assembly including: . . . pistons [that] . . . impart[] a linear force
capable of rotating at least a portion of the seal assembly . . . and moving the
at least portion of the seal assembly in a direction axially parallel to the
centerline of the body bore . . . while the position of the body relative to the
wellhead is maintained.” Final Act. 8. The Examiner relies on Klemm for
disclosing “an earth drilling device which is capable of being used as a
torque provider assembly” (id.) and reasons that it would have been obvious
“to combine the subsea well head system by Baugh with the earth drilling
device by Klemm in order to rotate [(Baugh’s drill pipe 236)] for setting
[(Baugh’s sealing assembly 180)].” Id. at 8—9. Regarding the “modified
subsea well head system of Baugh by Klemm,” the Examiner determines
that the pistons “impart[] a linear force capable of rotating the at least a
portion of [Baugh’s sealing assembly 180] .. . and moving the at least
portion of the seal assembly in a direction axially parallel to the centerline of
the body,” because “when the seal assembly 180 is set, the seal assembly
with seals 330 and 332 . . . will be compressed downwardly.” Id. at 9
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Appeal 2014-005694
Application 12/866,060
(citing Baugh col. 14:60-67; Figs. 4, 4A). In further support, the Examiner
determines that Baugh discloses “transmit[ting] the rotational movement of
the packing nut (182) to the axial movement of the packing nut which serves
the same function as [Appellants’] landing ring [22].” Ans. 5. The
Examiner also determines that “the position of the body 19 of Klemm
relative to the wellhead 21 is maintained since there is no relative axial
movement between the body 19 and the wellhead 21.” Final Act. 10 (citing
Klemm, Fig. 1).
As an initial matter, Appellants argue that “Klemm fails to . . . teach a
body with pistons removably attachable to a wellhead.” Appeal Br. 12
(emphasis added). However, claim 1 as currently pending does not require
the body of the torque provider assembly to be “removably attachable” to
the wellhead. See Adv. Act. 1 (dated Aug. 30, 2013) (“The proposed
amendments . . . will not be entered . . . .”); see also id. at 3 (“The scope of
the claims 1,7, 19 are changed due to the change from ‘fixably’ to
removably.’”); Adv. Act. 1, 2 (dated Oct. 7, 2013); Adv. Act. 1, 2 (dated
Dec. 27, 2013); Claim 1 as amended by the Amendment dated May 28,
2013; Note 3 supra.
Appellants conclude that Klemm fails to teach “that the pistons are
capable of rotating an object in a wellhead in a first direction and moving the
object in the wellhead in a direction axially parallel to the centerline of the
bore of the body while the position of the body relative to the wellhead is
maintained,” and that “Baugh fails to correct these deficiencies.” Appeal Br.
12—13. As discussed supra, we agree with Appellants’ argument with
respect to axial movement and the disclosures of Klemm. However,
Appellants’ argument does not apprise us of error in the rejection as
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Application 12/866,060
articulated by the Examiner, which relies on the modification of Baugh to
include the torque provider assembly as disclosed in Klemm to result in the
claimed axial movement. See Final Act. 7—10; see also Baugh 14:29-40.
Moreover, to the extent Appellants’ argument is a recitation of the claims,
such an argument is not persuasive. See 37 C.F.R. § 41.37(c)(l)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1356—57 (Fed. Cir. 2011) (holding that “the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
Appellants also argue that “Baugh completely fails to teach a torque
provider with a body attachable to the wellhead 24” and “does not teach
using pistons at all.” Reply Br. 7—8. However, the Examiner relies on
Klemm, not Baugh, for teaching a torque provider assembly including body
19 attachable to wellhead 21 and including pistons. See Final Act. 2; see
also id. at 9—10.
Appellants further argue that “Baugh also teaches that the entire
system is insertable through a BOP of a subsea well whereas Klemm
requires a system mounted on a full-track vehicle 10 above ground.” Reply
Br. 8. Appellants’ argument does not address the rejection as articulated by
the Examiner, which modifies the system of Baugh to include only the
torque provider assembly, as taught by Klemm, to provide rotation; the
Examiner does not propose incorporating Klemm’s full-track vehicle. In
addition, this is not the proper obviousness inquiry. In re Keller, 642 F.2d
413, 425 (CCPA 1981) (holding that “[t]he test for obviousness is not
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Application 12/866,060
whether the features of a secondary reference may be bodily incorporated
into the structure of a primary reference; . . . [rjather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton”).
Accordingly, Appellants’ arguments do not apprise us of error in the
Examiner’s rejection of independent claim 1. Appellants chose not to
present separate arguments for the patentability of claims 3—6 and 13—15,
which depend from claim 1 (Appeal Br. 13), and therefore we sustain the
Examiner’s rejection of claims 1, 3—6, and 13—15.
Rejection III
Appellants do not present separate arguments for the patentability of
dependent claims 12, 18, 26, and 27, which depend from independent claims
7 and 19. Appeal Br. 13. Because we do not sustain the Examiner’s
rejection of independent claims 7 and 19, as discussed supra, we also do not
sustain the Examiner’s rejection of claims 12, 18, 26, and 27 depending
therefrom.
DECISION
The Examiner’s decision to reject claims 7—11, 16, 17, and 19—25
under 35 U.S.C. § 102(b) is REVERSED.
The Examiner’s decision to reject claims 1, 3—6, and 13—15 under 35
U.S.C. § 103(a) is AFFIRMED.
The Examiner’s decision to reject claims 12, 18, 26, and 27 under 35
U.S.C. § 103(a) is REVERSED.
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Appeal 2014-005694
Application 12/866,060
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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